`571-272-7822
`
`Paper No. 10
`Entered: July 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`v.
`MICHIGAN MOTOR TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2020-00455
`Patent 7,116,081 B2
`
`
`
`
`
`
`
`
`
`Before NEIL T. POWELL, BARBARA A. PARVIS, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`INTRODUCTION
`I.
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
`pursuant to 35 U.S.C. §§ 311–319 requesting an inter partes review of
`claims 1–20 (“challenged claims”) of U.S. Patent No. 7,116,081 B2
`(Ex. 1001, “the ’081 Patent”). Paper 2 (“Pet.”). Michigan Motor
`
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`Patent 7,116,081 B2
`Technologies LLC (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”).
`We apply the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of “a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.”1 Upon
`consideration of the parties’ contentions and the evidence of record at this
`preliminary juncture in the proceeding, we determine that Petitioner has
`demonstrated that there is a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one of the challenged claims of the
`’081 Patent.
`
`BACKGROUND
`II.
`Related Matters
`A.
`The parties state that the ’081 Patent was asserted in Michigan Motor
`Technologies LLC v. Volkswagen AG, Case No. 2:19-cv-10485 (E.D.
`Mich.). Pet. 2; Paper 5, 1. The parties further state that the Second Amended
`Complaint in that matter no longer asserts infringement of the ’081 Patent.
`Pet. 2; Paper 5, 1.
`The parties also identify the following proceedings which were
`dismissed due to settlement: Michigan Motor Technologies LLC v. Hyundai
`Motor Co., Case No. 2:17-cv-12901 (E.D. Mich.); Hyundai Motor Co. v.
`Michigan Motor Technologies LLC, IPR2018-01078. Pet. 2; Paper 5, 1.
`
`The ’081 Patent
`B.
`The ’081 Patent is directed to thermal protection for high output
`vehicle alternators. Ex. 1001, 1:6–8, 1:58–63. A thermal protection scheme
`
`
`1 We have authority under 35 U.S.C. § 314 to determine whether to institute
`an inter partes review. See 37 C.F.R. § 42.4(a) (2020).
`
`2
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`Patent 7,116,081 B2
`is illustrated in Figure 2 of the ’081 Patent, which is reproduced below. Id. at
`2:37–40.
`
`
`Figure 2 of the ’081 Patent, above, is a flow chart diagram showing steps
`performed by thermal protection algorithm 100 of a duty cycle control
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`Patent 7,116,081 B2
`system. Id. at 5:20–23. Algorithm 100, among other things, signals changes
`to the duty cycle controller to change the duty cycle in response to excess
`alternator temperature or excess rotor speed. Id. at 5:28–31.
`Algorithm 100 is initiated at step 102, after a vehicle engine has been
`turned on. Id. at 5:24–25. A duty cycle of 100% begins at step 110 and then
`a temperature determination for the alternator is made at step 112. Id. at
`5:32–37. If, at step 116, the temperature determined at step 112 is greater
`than a maximum temperature limit, the algorithm proceeds to step 118 to set
`the duty cycle limit and then returns to step 112. Id. at 5:62–67. The ’081
`Patent describes in a “preferred embodiment, using a Lundell type alternator,
`the maximum temperature limit may be in the range of about 145–155° C.,
`most preferably about 150° C.” Id. at 5:58–61.
`The ’081 Patent describes subsequent steps as follows:
`
`If the temperature 116 is below the maximum determined
`temperature, an alternator rotor speed 122 is determined. The
`rotor speed 122 is compared to a first speed limit 124. In a
`preferred embodiment, a first rotor speed limit may be set to limit
`generation of excess heat production by the alternator before the
`alternator temperature exceeds the maximum temperature limit
`116.
`Id. at 6:1–7.
`The ’081 Patent further describes if “the rotor speed 122 exceeds the
`first speed limit 124, the rotor speed 122 is compared to a second rotor speed
`limit 126.” Id. at 6:14–16. In accordance with the ’081 Patent “[w]hen the
`rotor speed 122 is below the second rotor speed limit 126, a first duty cycle
`limit 128 is set” (id. at 6:18–20) and “[i]f the speed 122 exceeds the second
`rotor speed limit 126, a second duty cycle limit 130 is set” (id. at 6:32–33).
`The ’081 Patent describes that “the first duty cycle limit 128 for the field
`drive duty cycle may be set at about 90%” (id. at 6:28–29) and “the second
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`duty cycle limit 130 for the field drive duty cycle may be set at about 80%”
`(id. at 6:35–37).
`
`Illustrative Claims
`C.
`Petitioner challenges claims 1–20 of the ’081 Patent. Pet. 1. Claims 1,
`10, and 17 are the independent claims. Claims 2–9, 11–16, and 18–20
`depend, directly or indirectly, from claim 1 or 10. Independent claim 1,
`reproduced below, is illustrative of the claimed subject matter.
`1. A thermal protection system for a high output vehicle alternator,
`said system comprising:
`a duty cycle control system;
`an alternator having a temperature limit and at least one rotor
`speed limit, said alternator operably connected to said duty
`cycle control system;
`a field current supply to said alternator;
`an alternator rotor speed sensor in communication with said duty
`cycle control system for determining an alternator rotor
`speed; and
`an alternator temperature sensor in communication with said
`duty cycle control system, for determining an alternator
`temperature, wherein said duty cycle control system regulates
`said field current supply to said alternator based on said
`alternator rotor speed and said alternator temperature in order
`to maintain said alternator
`temperature below said
`temperature limit and prevent excess heat from being
`generated.
`Ex. 1001, 7:5–22.
`
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`Evidence
`D.
`Petitioner relies on the following references:
`Japanese Patent Application Publication No. H10-4698, filed June 13,
`1996, published January 6, 1998 (Ex. 1005, “Yamashita”);
`U.S. Patent No. 6,414,832 B1, filed March 23, 2000, issued July 2,
`2002 (Ex. 1007, “Crecelius”); and
`International Patent Publication No. WO 97/06594 A1, filed August 8,
`1996, published February 20, 1997 (Ex. 1008, “Mlakar”).
`Additionally, Petitioner relies on the supporting Declaration of Glenn
`R. Bower, Ph.D. Ex. 1003. Patent Owner relies on the supporting
`Declaration of Russell Leonard, Ph.D. Ex. 2001.
`
`Prior Art and Asserted Grounds
`E.
`Petitioner asserts that claims 1–10 are unpatentable based on the
`following grounds in Table 1 below:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §
`Yamashita
`1–7, 10–16, 18–20
`103(a)
`Yamashita, Crecelius
`6, 8, 9, 15
`103(a)
`Yamashita, Mlakar
`17
`103(a)
`Table 1 Summarizes the Grounds Asserted by Petitioner.
`Because the challenged claims of the ’081 Patent have an effective
`filing date before March 16, 2013, the 35 U.S.C. §§ 102 and 103 provisions
`of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`§§ 3(b)–3(c), 3(n)(1), 125 Stat. 284, 285–87, 293 (2011) do not apply.
`
`III. ANALYSIS
`Legal Standards
`A.
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of non-
`obviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18
`(1966). With respect to the fourth Graham factor, the parties have not
`presented argument or evidence directed to objective evidence of
`nonobviousness at this early juncture in the proceeding. See generally Pet.;
`Prelim. Resp.
`
`Level of Ordinary Skill in the Art
`B.
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) the educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every
`case, and one or more of these or other factors may predominate in a
`particular case.” Id. The level of ordinary skill in the art is also reflected by
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`Petitioner argues that a person having ordinary skill in the art “would
`have had (1) a B.S. degree in Mechanical or Electrical Engineering (or
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`equivalent) and (2) at least 2–4 years of academic or industry experience in
`the relevant field of vehicle electrical system design, installation, or
`maintenance.” Pet. 7 (citing Ex. 1003 ¶¶ 50–51). Patent Owner offers a
`slight different proposal asserting that a person having ordinary skill in the
`art would have had “(1) a B.S. in mechanical engineering or a closely related
`field with three or more years of experience in either engine systems or
`engine control systems or (2) at least a M.S. in mechanical engineering.”
`Prelim. Resp. 13 (citing Ex. 2001 ¶ 14).
`Considering the subject matter of the ’081 Patent, the background
`technical field, and the asserted prior art, we agree with Petitioner’s
`proposed qualifications for an acceptable educational background. Our view
`is that degrees in mechanical engineering, electrical engineering, or some
`equivalent level of education, would provide sufficient educational
`background in light of the technology at issue in the’081 Patent and asserted
`prior art. Further, we agree with Petitioner that experience with vehicle
`electrical system design, installation, or maintenance is commensurate with
`the scope of the ’081 Patent at issue and the asserted prior art. The
`experience set forth by Patent Owner is too broad because it includes any
`experience with “engine systems,” rather than just the relevant experience
`set forth by Petitioner and Patent Owner’s alternative of “at least a M.S. in
`mechanical engineering” is too narrow and vague because it includes “at
`least” and does not include relevant equivalent levels of education.
`Based on the current record and for purposes of this Decision,
`therefore, we adopt Petitioner’s proposed level of ordinary skill in the art,
`except that we delete the qualifier “at least” to eliminate vagueness as to the
`amount of practical experience. The qualifier expands the range indefinitely
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`Patent 7,116,081 B2
`without an upper bound and, thus, precludes a meaningful indication of the
`level of ordinary skill in the art.2
`
`Claim Construction
`C.
`We construe claims “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2020). Specifically, we apply the principles
`set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005)
`(en banc). Under that standard, the words of a claim are generally given their
`“ordinary and customary meaning,” which is the meaning the term would
`have to a person of ordinary skill at the time of the invention, in the context
`of the entire patent including the specification. Phillips, 415 F.3d at 1312–
`13.
`
`1.
`
`“wherein said duty cycle control system regulates said field current
`supply to said alternator based on said alternator rotor speed and
`said alternator temperature in order to maintain said alternator
`temperature below said temperature limit and prevent excess heat
`from being generated”
`Our discussion in this section pertains to the recitation above in claim
`1, as well as similar recitations set forth below in claims 10 and 17,
`respectively.
`[Claim 10] . . . generating a duty cycle control signal to regulate
`a field current supply to said alternator based on said
`temperature comparison signal and said rotor speed
`comparison signal in order to maintain said alternator
`temperature
`below
`said
`pre-determined
`alternator
`temperature limit and prevent excess heat from being
`generated by said alternator.
`
`
`2 We encourage the parties to explain further why differences in their
`proposed skill levels are material, if at all, in the instant proceeding.
`
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`Patent 7,116,081 B2
`Ex. 1001, 7:59–65 (corresponding recitation from claim 10).
`[Claim 17] . . . means, in communication with said means for
`comparing said indicative temperature signal and said means
`for comparing said indicative rotor speeds, for generating a
`duty cycle control signal based on said
`temperature
`comparison signal and said rotor speed comparison signal,
`and sending said duty cycle control signal to said duty cycle
`control system to regulate a field current supply to said
`alternator such that said operating temperature is maintained
`below said pre-determined alternator temperature limit and
`excess heat is not being generated.
`Id. at 8:36–46 (corresponding recitation from claim 17).
`Petitioner asserts that the language following “in order to” in claim 1
`“is nothing more than an intended use or intended result and should not be
`given patentable weight.” Pet. 9. Petitioner, more specifically, asserts that
`“prevent excess heat from being generated” “merely states” the goal and
`does not further limit claim 1. Id. at 8–11 (citing, e.g., Ex. 1003 ¶¶ 61–71).
`Petitioner asserts that its arguments apply to similar recitations in claims 10
`and 17. Id.
`Patent Owner disputes Petitioner’s contentions arguing that the
`entirety of the clause in each of the independent claims should be given
`patentable weight. Prelim. Resp. 1–5, 13–18. Patent Owner also provides a
`proposed construction asserting that the disputed terms should be “construed
`to mean that ‘the duty cycle control system reduces the alternator rotor
`speed, even when the alternator temperature has not exceeded the
`temperature limit, to reduce alternator heat generation preemptively, which
`would proactively prevent alternator overheating.’” Id. at 16. Patent Owner,
`more specifically, asserts the following:
`
`In relevant part, the “Reasons for Allowance” . . . are as
`follows:
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`“The following is an examiner’s statement of
`reasons for allowance. The remarks sent on
`05/19/06 are convincing. The Prior Art fails to
`disclose, in combination with all the limitations that
`the duty [cycle] control system regulates the field
`current to the alternator based on the rotor speed and
`alternator temperature in order to maintain the
`alternator below a temperature limit and preventing
`excess heat to be generated.” (Exhibit 1003 at 208).
`The ’081 patent states that “ . . a first rotor speed limit
`may be set to limit generation of excess heat production by the
`alternator before the alternator temperature exceeds the
`maximum temperature limit 116.” (Ex. 1001 at 6:4-7) (emphasis
`added).
`Id. at 3; see also id. at 15–17 (citing Ex. 2001 ¶ 40) (asserting that proposed
`construction is supported by the ’081 Patent Specification and Prosecution
`History).
`The claim language, the ’081 Patent Specification, and the ’081 Patent
`Prosecution History do not support Patent Owner’s proposed construction.
`Patent Owner’s proposed construction, i.e., “the duty cycle control system
`reduces the alternator rotor speed, even when the alternator temperature has
`not exceeded the temperature limit, to reduce alternator heat generation
`preemptively, which would proactively prevent alternator overheating”
`interjects language not recited in the challenged claims. Prelim. Resp. 16
`(emphases added). For instance, instead, of reciting “reduce the alternator
`rotor speed” as proposed by Patent Owner (id.), claim 1 recites “regulates
`said field current supply to said alternator” and claims 10 and 17, similarly
`recite “regulate a field current supply to said alternator.” Also, claims 1, 10,
`and 17 do not recite “even when the alternator temperature has not exceeded
`the temperature limit,” “preemptively,” or “proactively.”
`
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`The ’081 Patent Specification describes “[i]n a preferred embodiment,
`a first rotor speed limit may be set to limit generation of excess heat
`production by the alternator before the alternator temperature exceeds the
`maximum temperature limit 116.” Ex. 1001, 6:4–7 (emphasis added). The
`’081 Patent Specification further describes details regarding the setting that
`limit including, for example, “[i]n a preferred embodiment, as described
`above with the maximum temperature for the specific alternator set at 150°
`C., the first speed limit 124 of about 2500 rpm, the first duty cycle limit 128
`for the field drive duty cycle may be set at about 90%.” Id. at 6:26–29.
`Although certain dependent claims recite certain further details, independent
`claims 1, 10, and 17 do not recite or require actual values for the alternator
`temperature or alternator speed limits.
`The ’081 Patent Prosecution History also does not support Patent
`Owner’s proposed construction. In the portion relied upon by Patent Owner,
`the Examiner restates the recitation in claim 1, which differs from Patent
`Owner’s proposed construction as discussed above. Ex. 1002, 208.
`Patent Owner asserts “this claim language was already construed by
`the Patent Office during prosecution of the application that became the ’081
`patent, and thus, should not be subject to reconsideration in an IPR
`proceeding under the provisions of 35 U.S.C. § 325(d).” Prelim. Resp. 2, 15.
`Although we consider the prosecution history in our claim construction
`determination, we do not agree with Patent Owner regarding 35 U.S.C.
`§ 325(d), which pertains to whether trial is instituted. Furthermore, as
`discussed, the prosecution history does not support Patent Owner’s proposed
`construction.
`Accordingly, we do not adopt Patent Owner’s proposed construction
`based on the record before us at this early juncture of the proceeding.
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`Applying the ordinary and customary meaning, we give the disputed term
`patentable weight without making a determination regarding intended use.
`No further determination is needed regarding that issue to resolve the
`disputes between the parties based on the preliminary record at this early
`stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999))).
`
`2. Means-Plus-Function Terms
`Petitioner also provides proposed constructions in compliance with 37
`C.F.R. § 42.104(b)(3) for the means-plus-function recitations in claim 17,
`which are summarized in Table 2 below. Pet. 12–16.
`Means-Plus-
`Function Claim
`Element
`
`Corresponding Structure
`
`“Any temperature sensor,
`combination of sensors, and
`sensor placement to monitor
`alternator temperature
`commonly known in the art may
`be used to detect the alternator
`temperature.”
`Ex. 1001, 4:4–22.
`A comparator: “The alternator
`temperature signal 64 is input
`with the alternator reference
`temperature 62 at a comparator
`66. A signal from the
`comparator 66 is input to the
`AND gates 52–58.” Ex. 1001,
`4:24–27.
`
`Recited
`Function
`
`“means for
`determining an
`operating temperature
`for said alternator”
`
`“determining an
`operating
`temperature for
`said alternator”
`
`“means for
`comparing said
`operating temperature
`to a pre-determined
`alternator
`temperature limit and
`providing a
`temperature signal
`corresponding to said
`
`“comparing said
`operating
`temperature to a
`pre-determined
`alternator
`temperature
`limit and
`providing a
`temperature
`
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`Means-Plus-
`Function Claim
`Element
`comparison”
`
`Recited
`Function
`signal
`corresponding
`to said
`comparison.”
`
`“means for
`determining an
`operating alternator
`rotor speed”
`
`“determining an
`operating
`alternator rotor
`speed”
`
`“means for
`comparing said rotor
`speed to a
`predetermined rotor
`speed limit and
`providing a rotor
`speed signal
`corresponding to said
`comparison”
`
`“means… for
`generating a duty
`cycle control signal
`based on said
`temperature
`comparison signal
`and said rotor speed
`comparison
`signal, and sending
`said duty cycle
`control signal to said
`duty cycle control
`system”
`
`“comparing said
`rotor speed to a
`pre-determined
`rotor speed
`limit…
`corresponding
`to said
`comparison”
`“generating a
`duty cycle
`control signal
`based on said
`temperature
`comparison
`signal and said
`rotor speed
`comparison
`signal, and
`sending said
`duty cycle
`control signal to
`said duty cycle
`control system”
`
`14
`
`Corresponding Structure
`
`A device that converts an
`alternator frequency into a rotor
`speed: “A rotor speed signal 70
`is generated from the
`conversion of the stator winding
`14 frequency to voltage to
`reflect the speed of the rotor
`12.” Ex. 1001, 4:28–30.
`A comparator: “The rotor speed
`signal 70 is supplied to a
`comparator 72 and a comparator
`74. The comparator 72
`compares the rotor speed signal
`70 with a first rotor speed limit
`76. A signal from comparator
`72 is input to the AND gates 52
`and 56.” Ex. 1001, 4:30–34.
`
`A controller: “MOSFET switch
`26,” “AND gate 30,” “OR gate
`32,” and “comparator 40.” Ex.
`1001, 2:62–65, 3:7–11, 3:16–
`18, 3:26–30, Fig. 1.
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`Table 2 Summarizes Petitioner’s Means-Plus-Function Contentions.
`Patent Owner does not dispute the accuracy of Petitioner’s proposed
`constructions. Prelim. Resp. 2–5, 13–18. In light of the issues before us
`based on the preliminary record at this early juncture in the proceeding, we
`use Petitioner’s means-plus-function constructions for the terms construed
`under 35 U.S.C. § 112, ¶ 6.3 We need not make further determinations to
`resolve the disputes between the parties. See Nidec, 868 F.3d at 1017.
`
`D. Obviousness over Yamashita—Claims 1–7, 10–16, and 18–20
`Petitioner asserts claims 1–7, 10–16, and 18–20 of the ’081 Patent are
`unpatentable, under 35 U.S.C. § 103(a), as obvious over Yamashita. Pet. 5,
`17–40. Patent Owner opposes Petitioner’s showing. Prelim. Resp. 1–5, 21–
`22. In our discussion below, we first provide a brief overview of Yamashita,
`and then we address the parties’ contentions in turn.4
`
`Yamashita
`1.
`Yamashita is directed to a power generation controlling device for
`controlling power that is applied to a field coil in a power generating device
`that is driven coupled to an internal combustion engine. Ex. 1005 ¶ 1.
`Yamashita describes alternator 11 comprising rotor 12, stator 13, and
`rectifier 14. Id. ¶ 15. Rotor 12 is structured from pole core 15, field coil 16,
`and shaft 17, among other things. Id. ¶ 16.
`Yamashita describes Integrated Circuit (IC) regulator 26 for
`controlling power applied to field coil 16. Id. ¶ 19. IC regulator 16
`comprises controller 28 having memory 27. Id. Controller reads battery
`
`
`3 The ’081 Patent’s filing date also is before the effective date set for the
`AIA’s changes to § 112. See AIA § 4(e), 125 Stat. at 297.
`4 We discuss claims 6 and 15 and obviousness over Yamashita below in
`Section III.E.
`
`15
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`voltage and rotational speed from rotational speed sensor 35 and carries out
`duty control for the current to field coil 16 based on those values. Id.
`Yamashita also describes that the temperature of alternator 11 may be
`detected directly through sensors. Id. ¶ 35. Yamashita describes limiting
`power applied to field coil 16 “if the actual torque or temperature, detected
`by the sensors, exceeds a prescribed value.” Id.
`
`Claim 1
`2.
`The dispute between the parties centers on whether Yamashita teaches
`“wherein said duty cycle control system regulates said field current supply to
`said alternator based on said alternator rotor speed and said alternator
`temperature in order to maintain said alternator temperature below said
`temperature limit and prevent excess heat from being generated,” recited in
`claim 1. See generally Prelim. Resp. At this early juncture in the proceeding,
`Petitioner’s contentions and evidence for the other recitations in claim 1 are
`unopposed. Id.
`
`a)
`
`The Preamble—“A thermal protection system for a high output
`vehicle alternator, said system comprising”
`To account for this limitation, Petitioner points to Yamashita’s
`teachings relating to controlling power that is applied to a field coil in an
`alternator. Pet. 19 (citing Ex. 1005 ¶¶ 1, 15; Ex. 1003 ¶ 87). Petitioner
`further asserts Yamashita describes that its objective is to eliminate the
`occurrence of heat damage. Id. at 19–20 (citing Ex. 1005 ¶¶ 9, 32; Ex. 1003
`¶ 87). At this early juncture, Patent Owner does not dispute Petitioner’s
`showing. See generally Prelim. Resp.
`We determine Petitioner’s assertion is sufficient for institution.
`Yamashita describes “[t]he present invention relates to a power generation
`controlling device for controlling power that is applied to a field coil in a
`
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`Patent 7,116,081 B2
`power generating device that is driven coupled to an internal combustion
`engine.” Ex. 1005 ¶ 1. Yamashita also describes that in accordance with
`“[o]ne embodiment . . . an alternator (an AC [alternating current] power
`generating device) and an IC regulator is mounted in a vehicle.” Id. ¶ 15.
`Yamashita further describes an “object” of “[t]he present invention” is,
`among other things to eliminate “the occurrence of heat damage.” Id. ¶ 9;
`see also id. ¶ 32 (describing that because the amount of heating of the field
`coil 16 is reduced “it is possible to prevent the occurrence of thermal
`damage due to an increase in temperature”).5
`Upon consideration of the contentions and the evidence of record, we
`determine Petitioner shows sufficiently, at this early stage in the proceeding,
`that Yamashita teaches the preamble.
`
`“a duty cycle control system”
`b)
`To account for this limitation, Petitioner points to Yamashita’s IC
`regulator 26. Pet. 20–21 (citing Ex. 1005 ¶¶ 19, Fig. 2; Ex. 1003 ¶ 87). At
`this early juncture, Patent Owner does not dispute Petitioner’s showing. See
`generally Prelim. Resp.
`We determine Petitioner’s assertion is supported sufficiently for
`institution by Yamashita’s teachings. For instance, Yamashita describes that
`IC regulator 26 includes controller 28 for controlling power that is applied to
`field current 16 for duty control as follows:
`
`The IC regulator 26 is for controlling the power that is
`applied to the field coil 16. The electrical structure of the
`charging device will be explained next. As illustrated in FIG. 2,
`the IC regulator 26 comprises a transistor 29 and a controller 28
`
`5 Because Petitioner shows sufficiently for institution that the recitation in
`the preamble is satisfied by the prior art, the issue of whether the preamble is
`limiting need not be resolved at this stage of the proceeding.
`
`17
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`Patent 7,116,081 B2
`that has a memory 27. . . . The controller 28 reads in the battery
`voltage VB and also the rotational speed N from the rotational
`speed sensor 35, and turns the transistor 29 ON and OFF, based
`on these values VB and N, to carry out duty control for the
`current to the field coil 16.
`Ex. 1005 ¶ 19 (emphases added).
`Upon consideration of the contentions and the evidence of record, we
`determine Petitioner shows sufficiently, at this early stage in the proceeding,
`that Yamashita teaches “a duty cycle control system.”
`
`c)
`
`“an alternator having a temperature limit and at least one rotor speed
`limit, said alternator operably connected to said duty cycle control
`system”
`To account for this limitation, Petitioner points to Yamashita’s
`description that field coil 16 of alternator 11 is connected to IC regulator 26.
`Pet. 21 (citing Ex. 1005 ¶¶ 15, 17, 19, Fig. 2; Ex. 1003 ¶ 89). Relying on Dr.
`Bower’s testimony, Petitioner also points to teachings in Yamashita to show
`that alternator 11 has a temperature limit and a rotor speed limit. Id. at 21–22
`(citing Ex. 1005 ¶¶ 19, 30, 35, 37, 40; Ex. 1003 ¶¶ 90–93). At this early
`juncture, Patent Owner does not dispute Petitioner’s showing. See generally
`Prelim. Resp.
`We determine Petitioner’s assertion is supported sufficiently for
`institution by Yamashita’s teachings. For instance, Yamashita states “[t]he
`alternator 11 comprises a rotor 12, a stator 13, and a rectifier 14” and “[t]he
`rotor 12 is a part that functions as a magnetic field and is structured from a
`pole core (magnetic pole) 15, a field coil 16, a shaft 17, and so forth.” Ex.
`1005 ¶¶ 15, 16. Yamashita also describes that “[t]he collector of the
`transistor 29 [of IC regulator 26] is connected, through a terminal 30 and a
`field coil 16, to the positive terminal of a battery 31, as a rechargeable
`battery.” Id. ¶ 19.
`
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`Patent 7,116,081 B2
`Regarding the limits recited in the claim, Dr. Bower testifies that a
`person having ordinary skill in the art would have understood that each of
`Yamashita’s “prescribed value[s]” set in advance for temperature and
`rotational speed and used in comparisons are limits for temperature and rotor
`speed. Ex. 1003 ¶¶ 90, 91 (citing, e.g., Ex. 1005 ¶¶ 35, 40). Regarding
`temperature, Yamashita teaches “prescribed values are set in advance, in
`consideration of stalling of the internal combustion engine, belt slippage, the
`occurrence of thermal damage, and the like, and the power applied to the
`field coil 16 (the duty ratio) is limited if the actual torque or temperature,
`detected by the sensors, exceeds a prescribed value.” Ex. 1005 ¶ 35.
`Regarding rotational speed, Yamashita teaches, “it is possible to reduce the
`maximum value of the torque or temperature through limiting the applied
`power based on the result of comparing the rotational speed to a prescribed
`value, rather than detecting the torque or temperature directly.” Id. ¶ 40.
`Although Yamashita indicates that temperature and speed are used
`alternatively in certain of those teachings, as will be discussed further below,
`we determine Petitioner’s showing is sufficient for institution because
`Yamashita also teaches limiting the duty ratio based on a combination of
`rotational speed and temperature. Id. ¶ 37. We further determine Petitioner’s
`reasoning to combine Yamashita’s embodiments is sufficient for institution.
`See infra § III.D.2.g.
`Upon consideration of the contentions and the evidence of record, we
`determine Petitioner shows sufficiently, at this early stage in the proceeding,
`that Yamashita teaches “an alternator having a temperature limit and at least
`one rotor speed limit, said alternator operably connected to said duty cycle
`control system.”
`
`19
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`Patent 7,116,081 B2
`“a field current supply to said alternator”
`d)
`To account for this limitation, Petitioner asserts that a person having
`ordinary skill in the art “would have understood that the electrical
`components of IC regulator 26, including controller 28, transistor 29, and the
`electrical connections that supply current/power to field coil 16, constitute
`the claimed field current supply.” Pet. 22–23 (citing Ex. 1003 ¶ 94; Ex. 1005
`¶ 19). At this early juncture, Patent Owner does not dispute Petitioner’s
`showing. See generally Prelim. Resp.
`We determin